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You are here: Home / Industry News / Cannabis-Related Patent Strategies Pending Legalization

Cannabis-Related Patent Strategies Pending Legalization

June 25, 2019 by Joshua Goldberg Leave a Comment

In speaking with clients and others in the cannabis industry, one question we increasingly hear is whether it is worthwhile to try to obtain a patent for cannabis-related inventions in the current uncertain legalization climate. The short answer to this question is yes. That said, there are numerous potential strategies that can be pursued to get such a patent, with some making more sense than others.

For one thing, any granted patent rights are limited to, and only enforceable in, the country where they are obtained. So, for example, a US patent directed to your invention can only be enforced in the US, a Canadian patent directed to your invention can only protect your product sold in Canada, and so on. So, depending on where you hope to conduct your business, it may be necessary to obtain patent protection in one, two, or many different countries.

One solution to this issue that is commonly used in many industries is to take advantage of the International Patent Application process by filing what is called a Patent Cooperation Treaty (PCT) patent application. Filing a PCT patent application lets the applicant delay filing in each country where protection is desired for 30 months. This is typically used to defer the costs involved in filing in each individual country, which can be substantial, while also allowing the applicant time to further develop the invention to obtain a greater confidence it is worth proceeding.

In addition to these benefits, there is another substantial benefit to filing cannabis-related inventions using the PCT application route. Namely, the legalization of cannabis, and the potential ability to protect cannabis-related inventions, is in different stages of progress throughout the world. Filing a PCT application provides time for the relevant laws to develop, and hopefully come out in support of cannabis protection, before filing decisions must be made and costs must be incurred throughout the world.

This is a strategy that some companies are clearly already pursuing. For example, a simple search of the PCT online patent database reveals that more than 1,470 PCT applications have been filed and published directed to “cannabis” just since the beginning of 2016. Similarly, more than 1,230 PCT publications can be found directed to “cannabinoid,” while more than 1,160 PCT publications can be found directed to “THC” over the same time period. By point of comparison, similar searches of the US Patent and Trademark Office (USPTO) database over the same time frame reveal more than 600, 510, and 390 publications, respectively.

For companies focused on the US market only, filing a PCT application first has two negatives associated with it – the cost of an additional filing and the delay in examination of the corresponding US patent application. Since the US Patent & Trademark Office is currently examining and granting patent applications directed to various cannabis-related inventions, it may make sense to just file a US patent application directly. However, since there is still a lingering concern over whether a US court will permit a patent directed to a federally illegal substance to be enforced against a third party, filing a PCT application to wait for more clarity on this issue might make sense. In addition, for companies having any interest in various other international markets, filing a PCT application makes sense for all the reasons mentioned above. Hopefully, more markets will clearly allow the protection of cannabis-related inventions by the time 30 months have passed and it is necessary to file the PCT application in any country of interest.

Contextual Link – Nexus November

Contextual Link – Cova November

Filed Under: Industry News, Policy & Legal Tagged With: Patent Cooperation Treaty (PCT), Patent Strategies, USPTO

About The Author:

Joshua Goldberg

Joshua B. Goldberg is the Partner-in-Charge of the Chemical, Pharmaceutical and Biotechnology Department of Nath, Goldberg & Meyer and works extensively with the firm’s Trademark department. Mr. Goldberg’s practice involves portfolio management and analysis, including the preparation, prosecution, and acquisition of U.S. and foreign patents across a wide range of technology areas. Mr. Goldberg has had a recent focus on patent and trademark issues related to cannabis products and has helped navigate clients through the options available for protecting the same.

Howard W. Kline is the Trademark Department Manager at Nath, Goldberg, and Meyer. Mr. Kline’s practice involves all aspects of trademark, unfair competition, and copyright law. He counsels clients on the availability and registration of trademarks and secures trademark registrations in the U.S. and throughout the world. Mr. Kline also represents clients in matters before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board.

Practice Areas

Mr. Goldberg’s practice areas include:

Patent Estate Development, both in the U.S. and Internationally
U.S. and International Patent Application Drafting and Prosecution for Chemical, Pharmaceutical, and Biotechnology Innovations
Technology Evaluation and Positioning
Legal and Scientific Research and Analysis regarding Patentability, Patent Validity, Enforceability, and Freedom to Operate
Licensing, Acquisitions, Divestitures, and Joint Ventures
The Preparation, Filing, and Management of Oppositions Before the European Patent Office

Professional Profile

Mr. Goldberg received his practical scientific experience while performing research and development for Particle & Coating Technologies, Inc. During this stage of his career, Mr. Goldberg was responsible for the development, design, and experimental creation of various pharmaceutical delivery systems.

While in law school, Mr. Goldberg commenced his career in Intellectual Property law as a law clerk at NGM. Mr. Goldberg earned his U.S. Patent and Trademark Office Registration Number in 1998, and was admitted to the Bar of the Commonwealth of Virginia in 1999.

Mr. Goldberg has been actively practicing patent law at NGM since 1997. He has prepared and prosecuted numerous patent applications for both international and domestic clients in a wide variety of technology areas. His current practice places a particular emphasis on the chemical, pharmaceutical, biotechnology, and mechanical art areas. He also advises corporate, university, and independent clients in such areas as the development of offensive and defensive patent portfolios, the preparation of patent enforceability and invalidity opinions, and in freedom to operate searches and analysis

Mr. Goldberg is an elected Manager of the Chemical Society of Washington chapter of the American Chemical Society. He is also a member of the American Intellectual Property Law Association (AIPLA) and the Chemical Practice Subcommittee of AIPLA, the Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI), the Jewish Federation, the U.S. Patent Office’s Chemical and Biotechnology Customer Partnership, and other professional organizations.

Mr. Goldberg received his J.D. degree from The George Washington University (1999) and his B.S. degree in Chemical Engineering with a minor in Environmental Engineering from Washington University in St. Louis (1996). Mr. Goldberg is registered to practice before the U.S. Patent and Trademark Office and is admitted to practice before the Bars of the Commonwealth of Virginia and the District of Columbia. Mr. Goldberg is also admitted to practice before the Court of Appeals for the Fourth Circuit, and the Superior and Inferior Courts of the Commonwealth of Virginia.

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